In Intel Corporation v. Proxense LLC, IPR2025-00327, -00328, -00329, Paper 12 (P.T.A.B. June 26, 2025), Acting Director Stewart issued discretionary denials reaffirming the principle of "settled expectations" surrounding long-issued patents. Notably, in doing so, the Acting Director for the first time gave guidance on the kinds of arguments that may overcome settled expectations for older patents.
In denying institution, the Acting Director reasoned that "the challenged patents have been in force over nine years, creating settled expectations, and Petitioner does not provide any persuasive reasoning why an inter partes review is an appropriate use of Board resources." She cited Dabico Airport Solutions Inc. v. Axa Power APS, IPR2025-00408, Paper 21 (P.T.A.B. June 18, 2025), reinforcing a growing line of decisions in which long-issued patents are afforded "settled expectations" absent "persuasive reasons" warranting review. This rationale is consistent with another recent decision in iRhythm Technologies, Inc. v. Welch Allyn, IPR2025-00363, -00374, -00376, -00377, -00378, Paper 10 (PTAB June 6, 2025), where a patent in force for twelve years was similarly found to have created settled expectations, resulting in discretionary denial.
However, the Intel decision provides important guidance to help petitioners challenge older patents. She indicated that the settled expectations factor may not favor denial if "a significant change in law [] occur[s] since the patent issued" and that change "directly bears on the patentability of the challenged claims." The Acting Director further indicated that discretionary denial may be less appropriate where a petitioner can show that the patent has not been "commercialized, asserted, marked, licensed, or otherwise applied in a petitioner's particular technology space, if at all." She added, "[i]n the absence of any such information, . . . the Office is disinclined to disturb the settled expectations of Patent Owner."
This decision serves as a reminder that timing is crucial when challenging patents, particularly older ones. It also highlights the increasing importance of strategic petition drafting. Merely seeking review years after a patent has issued, without sufficient explanation, may no longer suffice. Petitioners should proactively anticipate and address the issue of "settled expectations"—for example, by presenting evidence of significant legal changes or demonstrating the patentee's failure to utilize the challenged patent—to improve their chances of securing institution. Conversely, patent owners can effectively invoke the principle of "settled expectations" as a defensive tool, when appropriate, to support discretionary denial of institution.
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